Sunday, June 30, 2013

On
June 26, in the case of Anticancer, Inc. v. Leica Microsystems, Inc., a federal
judge in the Southern District of California granted a motion for summary
judgment against Anticancer Inc., finding that Anticancer had failed to raise a
genuine issue of material fact with respect to the allegation that Leica
Microsystems had induced the infringement of US patent numbers 6,649,159;
6,759,038; and 6,251,384. (see the Court’s Order)
The patents generally relate to the use of green fluorescent protein (GFP) as
an indicator of promoter activity in research animals. The judge denied the
defendants’ motion for attorneys fees, but just barely, characterizing
Anticancer’s efforts to enforce its patent rights as “misguided.” Although the
court did not find the level of “bad faith” necessary to award attorney’s fees,
it suggested that if Anticancer continues to bring meritless lawsuits an award
of attorney’s fees could be justified.

The
defendant, Leica Microsystems, sells imaging equipment that presumably can be
used in a manner thatAnticancer believes would infringe its patents, but the mere act of
selling an item that can be used to infringe a patent does not in and of itself
constitute patent infringement. Under 35 USC 271(b) a party can be held liable
for inducing its customers to infringe a patent, but in order to prevail under
an inducement theory the patent owner must prove that the customers have
directly infringed the patent, and that the customer's were induced to infringe by the defendant . In this case, the court found that Anticancer had failed to produce
sufficient evidence to withstand summary judgment with respect to both elements, i.e., direct
infringement by Leica's customers and inducement by Leica.

Anticancer’s
purported evidence of direct infringement comprised numerous articles published
by scientists at various universities and research institutes that reported the
use of an instrument purchased from Leica. Anticancer attempted to establish infringement by
means of an expert declaration, but the court found that the declaration did
not raise a genuine issue of material fact with respect to direct infringement
by the third-party researchers. The court pointed out that the expert declaration did not
identify which of Anticancer's patent claims in particular were infringed by the methodologies described
in the publications. Furthermore, the court noted that all of the allegedly
infringe claims are method claims, and that the expert had not explained “how
the papers cited reflect the performance of each step of the methods claimed,
much less that they were performed in the required order.”

Anticancer’s
purported evidence of inducement consisted largely of Leica promotional materials,
such as press releases, articles and brochures used by the company to promote
its products. The court found two critical problems with this evidence. First,
and most importantly, Anticancer had failed to present any evidence that the
third-parties who had allegedly infringe the patents had ever seen any of the
promotional materials. Second, some of the evidence actually showed that the
products could be put to noninfringing use.

The court denied Leica’s request for an award
of attorney’s fees, essentially concluding that a determination of “bad faith” is
required for an award of attorney’s fees, and finding insufficient evidence
that Anticancer’s actions were sufficiently egregious to constitute bad faith.
However, the court went on to note that this is the third case in which
Anticancer’s claims of patent infringement have been resolved in the defendant’s
favor on summary judgment, and that although “Plaintiff’s efforts to enforce
its patent rights may, at this point, be misguided, a finding of bad faith may
be warranted if Plaintiff continues to press claims that ultimately have no
merit, especially if courts continue to rule against it on summary judgment
based on failures similar to those in this case."

The judge’s comments regarding the
potential for a finding of bad faith if Anticancer continues to attempt to
enforce its patents in this manner brings to mind a recent New York Times op-ed
authored by Chief Judge of the Federal Circuit Rader and law profs
Colleen Chien and David Hricik.These
authors suggested that a way to deal with the problem of frivolous patent
lawsuits (i.e., patent trolls) would be for the courts to make more use 35 USC 285 and Rule 11 of the
Federal Rules of Civil Procedure to shift the cost of litigation from
defendants to patent owners filing frivolous lawsuits. They reported that,
according to their count, attorneys fees were shifted under Section 285 in only 20 out of
nearly 3000 patent cases filed in 2011, a statistic they found to be “remarkable.”
The district court judge in the Anticancer case seemed close to awarding
attorneys fees to Leica, and perhaps with the encouragement of Chief Judge
Rader the next district court judge considering an award of sanctions against
Anticancer might actually pull the trigger.

26 comments:

This is the fantastic post. This post provided a lot information and these kinds of posts helps to keep users contribution with the positioning and to have concerning expression.How to Write a Great Poem

Can I simply say what a relief to uncover someone that actually understands what they are discussing on the web. You actually understand how to bring an issue to light and make it important. More and more people have to read this and understand this side of the story. I was surprised that you aren't more popular because you most certainly possess the gift.line icons

I appreciate that you produced this wonderful article to help us get more knowledge about this topic. I know, it is not an easy task to write such a big article in one day, I've tried that and I've failed. But, here you are, trying the big task and finishing it off and getting good comments and ratings. That is one hell of a job done!West Chester Termite Control

About Me

I am a law professor at the University of Missouri-Kansas City School of Law. My primary research interests lie at the intersection of biotechnology and intellectual property. This blog provides analysis and commentary on recent developments relevant to this area of the law.